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Post-Brexit Conversion of EU IP Rights Confirmed

24th August 2018

As expected the UK Government has now confirmed that registered EU IP Rights will automatically convert into national UK IP rights post-Brexit and will not be subject to any official Registry fee for such conversion...

The announcement confirms one of the proposals in the earlier released Draft Agreement, which also preliminarily agreed on a transition and implementation period running from 30th March 2019 to 31st December 2020. During the Transition Period EU IP Rights shall:

produce in respect of and in the UK the same legal effects as those that it produces within the Union and its Member States;

be interpreted and applied in accordance with the same methods and general principles as those applicable within the Union; and

be deemed to include the UK when making any reference to Member States in EU.

Where successful proceedings to invalidate, revoke, nullify or cancel an EU IP Right are initiated prior to the end of the transitional period the UK equivalent will likewise be invalidated, revoked, nullified or cancelled, unless the grounds therefore do not apply in the UK. However, there has yet to be any notification of substantive changes to the relevant UK IP laws from the Brexit date that would allow for different grounds applying in the UK.

The Draft Agreement also preliminarily agreed that at least until the end of the transitional period the principle of exhaustion of rights will apply in the UK as well as in the EU in respect of EU IP rights where relevant products have been put on the market in the European Economic Area by or with the consent of the IP right owner. However, it is not yet clear how exhaustion of rights will apply after the transitional period. The UK has indicated that it wants a policy that provides mutual benefits to both UK and EU IP rights holders, but it remains possible that parallel imports from the EU to the UK can be prevented by UK IP rights after the transitional period.

Unlike registered EU trade marks, designs and plant variety rights, applications that are still pending at the end of the transitional period will not automatically convert into UK equivalents. However, the owners of such applications will have the right to make a UK equivalent application within a short time of the end of the transitional period, in which case they will retain the EU priority and filing dates. For trade marks and designs the time limit is 9-months, while for community plant variety rights the time limit is 6-months.

While the UK is a member of both the Madrid Protocol and the Hague Agreement, the UK has agreed to take measures that will allow applications under those conventions that designate the EU before the end of the transitional period to still convert into national UK rights.